Butamax (TM) Advanced Biofuels LLC v. Gevo Inc.
MEMORANDUM ORDER denying 531 request to disqualify Dr. Ron Caspi as an expert witness. Signed by Judge Sue L. Robinson on 10/10/2012. (nmfn)
IN THE UNITED STATES DISTRICT COURT
FOR THE DISTRICT OF DELAWARE
Civ. No. 11-54-SLR
At Wilmington this 10th day of October, 2012, in consideration of Butamax's
September 14, 2012 Email Request for Emergency Relief regarding the disqualification
of Dr. Ron Caspi as an expert witness, the hearing held October 2, 2012 and the
papers filed in connection therewith;
IT IS ORDERED that said request (D. I. 531) is denied, for the reasons that
1. Procedural background. On September 14, 2012, Butamax contacted
chambers via email request in an attempt to "exclude Dr. Caspi [as an expert witness]
and preclude Gevo from contacting him further." (/d.) While it initially appeared that Dr.
Caspi was going to work with Butamax, he subsequently signed an agreement to work
for Gevo. In support of its request for disqualification, Butamax explained that Dr.
Caspi had signed a confidentiality agreement with Butamax "for the purposes of having
frank discussions about litigation issues that relate to his field of technology." (/d.)
During one such discussion, Dr. Caspi allegedly "raised potential arguments by Gevo"
and counsel for Butamax, specifically a junior associate ("JA") on the case, "discussed
how [such arguments] would be addressed." (/d.) According to Butamax, through the
"confidential relationship," Dr. Caspi "at least learned counsel's m.o. and decisionmaking process." (/d.)
2. On October 2, 2012, the court held a hearing on the matter. Dr. Caspi
testified about his interactions with Butamax and subsequent decision to consult for
Gevo. JA, the associate with whom Dr. Caspi allegedly had confidential discussions,
also testified in camera about those interactions. Following the hearing, the parties
submitted letter briefs in support of their positions. (D.I. 527 & 528)
3. Standard. Federal courts have the inherent power to disqualify experts.
See Syngenta Seeds, Inc. v. Monsanto Co., Civ. No. 02-1331, 2004 WL 2223252, at *1
(D. Del. Sept. 24, 2004). While there is no bright line rule for expert disqualification,
courts have generally adopted a two-part disqualification inquiry: (1) was it objectively
reasonable for the party seeking disqualification to have concluded that a confidential
relationship existed with the expert; 1 and (2) was confidential or privileged information
actually disclosed to the expert. /d. at *2; Novartis AG v. Apotex Inc., Civ. No. 09-5614,
2011 WL 691594, at *1 (D.N.J. Jan. 24, 2011); Life Technologies Corp. v. Biosearch
Technologies, Inc., Civ. No. 12-852, 2012 WL 1604710, at *5 (N.D. Cal. May 7, 2012).
In determining the reasonableness of a party's conclusion that a confidential
relationship existed, "courts consider several factors, including: (1) the length of the
relationship and the frequency of contact; (2) whether the moving party funded or
directed the formation of the opinion to be offered at trial; (3) whether the parties
entered into a formal confidentiality agreement; (4) whether the expert was retained to
assist in the litigation; (5) whether the expert was paid a fee; and (6) whether the expert
was asked to agree not to discuss the case with opposing parties or counsel."
Syngenta, 2004 WL 2223252, at *2.
Affirmative answers to both inquiries ordinarily compel disqualification; however,
"disqualification is likely inappropriate if either inquiry yields a negative response."
Wang Laboratories, Inc. v. Toshiba Corp., 762 F. Supp. 1246, 1248 (E.D. Va. 1991)
("[E]ven if counsel reasonably assumed the existence of a confidential relationship,
disqualification does not seem warranted where no privileged or confidential information
passed .... Similarly, disqualification should not occur in the absence of a confidential
relationship even though some confidential information may be disclosed."); see also
Syngenta, 2004 WL 2223252, at *2. The party seeking the disqualification bears the
burden of proof with respect to both factors. Syngenta, 2004 WL 2223252, at *2.
4. In addition to the above analysis, "courts also balance competing policy
objectives and concerns for fundamental fairness." /d. "The policy objectives in favor
of disqualification include the court's interest in preventing conflicts of interest and in
maintaining judicial integrity. The policy objectives weighing against disqualification
include maintaining accessibility to experts with specialized knowledge and encouraging
experts to pursue their professions." Apotex, 2011 WL 691594, at *1 (citations and
5. Facts. Dr. Caspi signed a confidentiality agreement with Kirkland & Ellis on
July 24, 2012. (PX 1) Dr. Caspi signed the agreement following an email exchange
between JA and Dr. Caspi on that same day, whereby JA explained that Dr. Caspi
would be an "ideal candidate to serve as a consultant" because of his "experience and
work with the [EC] Commission;" JA requested a "chance to further discuss this
opportunity" with him. (PX 2) Dr. Caspi responded affirmatively, and asked for some
information. (/d. at 5) JA suggested a telephone conference and, "in preparation for
our conversation, would you mind if I send you a non-disclosure form? Signing the form
would allow us to discuss the substance of the case in some detail, which may be
helpful to you in deciding whether this opportunity is of interest to you." (/d.) Still on
July 24, 2012, Dr. Caspi received and executed the "NDA,"2 and faxed it back to JA the
next day. (/d. at 3-4)
6. On August 16,2012, Dr. Caspi received clearance from his employer to
perform the consultation, and asked JA for "the relevant patents, and the stated
dispute." (/d. at 2) By email dated August 20, 2012, JA responded by forwarding the
two patents under discussion, and identifying the dispute as "the interpretation of
'acetohydroxy acid isomeroreductase having the EC number 184.108.40.206' in claim 1 of the
'188 patent and 'acetohydroxy acid isomeroreductase enzyme' in claim 1 of the '899
patent." (/d.) Following a brief phone conversation on August 27th, Dr. Caspi sent an
email to JA on August 29, 2012 wherein he asked her for more "details," "specifically,
what is Butamax's exact complaint against Gevo, and what does Gevo claim in return?
This was discussed briefly in our phone conversation, but not enough for me to fully
understand the nature of the conflict." (!d. at 1-2) In a responsive email sent that same
day, JA proposed another telephone conversation in order to "better give you the details
that you need and answer any questions you may have." (/d. at 1)
7. The ensuing telephone conversation took place on September 5, 2012, and
Presumably, the confidentiality, or nondisclosure, agreement.
lasted no more than 30 minutes. 3 Although Dr. Cas pi does not have a specific
recollection of this conversation, he does not dispute that, after JA went through the
patents as they related to the numbering system, and explained Butamax's position
about how the claims should be interpreted in view of cofactors, KARl enzymes, and
EC numbers, Dr. Caspi proposed an argument Gevo might make in response. (D. I. 532
at 17-24, 78) Dr. Cas pi recalls that JA did not want to discuss the subject any further
and did not respond with anything of substance. (/d. at 24-25) JA recalls that she
responded in a substantive fashion as to how Butamax would address this hypothetical.
(/d. at 78-79 (under seal))
8. Although Dr. Caspi ended the conversation with JA by expressing the
expectation that he would accept the assignment (id. at 26), Dr. Caspi in fact declined
the opportunity by an email dated September 11, 2012 and agreed to serve as an
expert for Gevo's counsel on September 13, 2012. (PX 2 at 1) In this regard, Dr. Caspi
had been contacted by Gevo's counsel on September 4th, met with counsel for Gevo
on September 11th, and agreed to serve as an expert for Gevo on September 12,
2012. Prior to making his decision, Dr. Caspi reviewed copies of several declarations
(as well as some of the other materials filed in this litigation) provided by Gevo's
counsel. (D. I. 532 at 33-36)
9. Discussion. For purposes of this analysis, I will assume that a confidential
relationship existed between Kirkland & Ellis and Dr. Caspi, based upon the executed
Dr. Caspi estimated that it lasted 10 to 15 minutes. (D.I. 532 at 50) In the
interests of fairness but the absence of a better estimate from Butamax, I have doubled
confidentiality agreement. (PX 1) I note in this regard, however, that it is apparent from
the record that not much, if any, explanation was given to Dr. Caspi before he signed
the agreement and that he did not fully understand the scope of the agreement even at
the time of the hearing. 4
10. With respect to the second prong of the test and the fairness/policy
considerations, and even accepting Butamax's version of the facts, I conclude that the
hypothetical posed by Dr. Caspi and JA's unsolicited response thereto do not constitute
confidential information sufficient to disqualify Dr. Caspi from consulting for Gevo. It is
evident from the record that Dr. Caspi was not retained by Butamax, had received no
fees from Butamax, had received no confidential documents from Butamax, 5 and had
participated in only two telephone conversations with counsel which, at most, lasted
less than an hour collectively. When compared to those cases where disqualification
has been granted, 6 the nature of the relationship and of the information allegedly
disclosed instantly is much too abbreviated to warrant such a drastic sanction. I
More specifically, Dr. Caspi testified that no confidential information was ever
shared with him. (See, e.g., id. at 18, 36-37) Dr. Caspi is correct in his view that no
confidential technical information was shared. It is Butamax's contention, however, that
JA's analyses constitute attorney work product that should be deemed confidential.
Indeed, counsel from Kirkland & Ellis declined to provide Dr. Caspi with even
publicly available documents from the litigation, e.g., the declarations of two other EC
Commission members that had been submitted on behalf of Butamax. (/d. at 35)
See, e.g., Koch Refining Co. v. Jennifer L. Boudreaux MV, 85 F.3d 1178, 1182
(5th Cir. 1996) (counsel spent considerable time with expert explaining his entire theory
of the case as well as trial tactics and documents generated for trial); Wang
Laboratories, 762 F. Supp. at 1249 (counsel shared a memorandum detailing and
assessing the patent file wrapper history, as well as a letter outlining potential defenses
to the suit).
conclude as well that the integrity of the judicial process will not be called into question,
and that it would be contrary to the interests of justice to preclude Dr. Caspi, one of a
limited number of individuals with expertise related to the EC numbering system, from
sharing his expertise under these narrow facts.
Disclaimer: Justia Dockets & Filings provides public litigation records from the federal appellate and district courts. These filings and docket sheets should not be considered findings of fact or liability, nor do they necessarily reflect the view of Justia.
Why Is My Information Online?